The Namibian Industrial Property Tribunal Rules Board recently circulated the draft Industrial Property Tribunal Rules (“draft Rules”) outlining various procedural steps relating to the conduct of matters before the Industrial Property Tribunal (“the Tribunal”) in Namibia.
The Tribunal is established in terms of the Namibian Industrial Property Act No. 1 of 2012 and is empowered to hear appeals to proceedings or decisions made by the Registrar of Industrial Property relating to, inter alia, the grant of a trade mark, patent, industrial design or utility model. Further, matters before the Registrar of Industrial Property can be referred to the Tribunal for hearing.
Adams & Adams’ trade mark litigation partners, Dale Healy and Kareema Shaik, were recently called upon to make submissions on the draft Rules. The draft Rules were considered and comments were duly submitted in early May 2021.
Our comments included that the draft Rules failed to make provision for the electronic service of documentation/notices in matters before the Tribunal. Electronic service of documents has become the norm and the COVID-19 pandemic has accelerated the legal profession’s move away from paper.
Our comments seek simultaneously to avoid making the service of documents the sole duty of the Registry, which invariably results in delays and increases costs. We have proposed that, where possible, a party to a matter should serve any document at the same time that it files the document with the Registry and that the Registry should receive electronic service of documents in addition to the hard copies that it requires; and that the parties should be entitled to elect to receive service electronically where is it convenient and possible. Registries which successfully place the duty of service on the registry invariably use efficient electronic systems and no longer administer the physical service of paper documents. There are countless examples of Registries that fail in their duties because they cannot handle the burden of serving physical documents. The other problem inherent to the practice is that the Tribunal may be required to adjudicate an uncontested matter in which it must be satisfied that its own efforts to serve a document were adequate. Matters tends to grind to a halt when a Tribunal is unable to effect service. Regrettably, the manner in which documents must be filed and served is prescribed by the Act, which limits the extent to which the Rules can be shaped. Nevertheless, we believe there is room to address some of the issues by changing the draft Rules.
Lastly, the draft Rules give the Tribunal the power to join any party whom the Tribunal considers to be a necessary party to an appeal. We questioned whether this was prudent, given that it is the responsibility of litigants to cite interested parties or join parties whose interests become apparent at a later stage or to notify such parties who may be entitled to intervene and take part in the proceedings. The Tribunal should only be entitled to direct a litigant to notify a third party of proceedings or to join such a party. The Rules also do not provide any mechanism by which such a joinder may be achieved.
We hope that our comments will be considered by the Industrial Property Tribunal Rules Board and that the Board will give due consideration to the underlying issues that our proposal seek to address.
Written by: Darshan Moodley (Associate TML)